Monday, March 12, 2012

Worried About Infringing Game Patent

Dear Rich: I am looking into possibly producing and selling a board game of my own design. I have done research into patent law and understand that patent applications are not available to the public for 18 months. So there is a "gap" where a patent may be in the works, but not available to patent searches. My understanding is that if I were to produce a product, my customers could be sued for patent infringement if my game ended up being in violation of some unknown patent. (Either unknown because of the "gap" I mentioned, or just an undetected.) Is this correct? Also, the theoretical unknown patent would likely have to be a method patent, as the types of game bits are not uncommon. As such, wouldn't that make the end user would the one actually infringing? If I pursue this business, is there a way to protect myself and my customers? It's true that an end user can be sued for patent infringement but that's rarely the case with board games. So, regardless of the patent issue, we doubt whether your customers would be in jeopardy.
Published patent applications. You're concerned that an unknown patent application will jettison your game. Keep in mind, you can't be sued for patent infringement until after a patent has issued --- that is, until after it's been officially granted by the USPTO. If you're concerned about recently published patent applications, you can review them at the USPTO's online patent gazette. When you review them, remember a few things:

  • just because a patent application is published 18 month after filing does not mean it will be issued, 
  • even if the application is issued as a patent, you won't be liable for infringements prior to issuance unless you have been placed on notice, and 
  • even if you were placed on notice, you would only be liable for infringements that occur after the notification. In other words, you should have sufficient time to consult an attorney and decide whether to halt manufacture and sale before a lawsuit could be filed. 

In summary, if you do withdraw the game in a timely manner prior to issuance, you will likely avoid liability.
Searching for board games. If you're searching for existing board game patents (not patent applications), this article should help. And if, after reading it, you feel your board game is sufficiently novel and nonobvious, you may wish to consider filing your own utility patent application, design patent application, or provisional patent application.

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